A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

PersonalWeb Technologies, LLC v. Apple, Inc., No. 18-1599 (Fed. Cir. (PTAB) Mar. 8, 2019). Opinion by Chen, joined by Moore and Taranto.

In an appeal from an IPR final written decision, the Federal Circuit reversed the Patent Trial and Appeal Board’s determination that certain patent claims were unpatentable as obvious. The court ruled that substantial evidence did not support the Board’s determination that the prior art inherently disclosed a disputed claim limitation.

The challenged patent relates to creating a unique identifier for a file or other data item that is independent of the data item’s user-defined name. The unique identifier is created by applying a cryptographic hash function to the data item. The main claim limitation in dispute recites “causing the content-dependent name of the particular data item to be compared to a plurality of values.” The Board concluded that the prior art necessarily compares the content-based identifier of the data item to a plurality of values. In other words, the Board found that the prior art inherently taught the required comparison.

The Federal Circuit ruled that substantial evidence did not support the Board’s inherency finding. Inherency “may not be established by probabilities or possibilities.” Rather, “a party must show that the natural result flowing from the operation as taught would result in the performance of the questioned function.” Here, the patent owner demonstrated other “equally plausible, if not more plausible” interpretations of the prior art’s teachings. Accordingly, the Federal Circuit reversed, ruling that the Board’s reliance on inherency was improper.

http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1599.Opinion.3-8-2019.pdf

Lectrosonics, Inc. v. Zaxcom, Inc., Nos. IPR2018-01129, -01130 (PTAB Feb. 25, 2019) (designated precedential on Mar. 7, 2019). Opinion by Deshpande, joined by Boalick and Pettigrew.

The Patent Trial and Appeal Board’s Order “provides information and guidance regarding motions to amend” in an inter partes review in accordance with 35 U.S.C. § 316(d) and the associated regulations set forth in 37 C.F.R. § 42.121.

As explained in the Order, “[a] motion to amend claims may cancel claims and/or propose substitute claims.” A request to substitute claims ordinarily will be treated as contingent, and the patent owner should specify “which claim is to be substituted for which claim, and under what circumstances.” Consistent with the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), the Board explained that “a patent owner does not bear the burden of persuasion to demonstrate the patentability of substitute claims.” Rather, the burden “ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.”

Section 316 states that a patent owner may, for each challenged claim, propose “a reasonable number of substitute claims.” Interpreting this provision, the Board stated that “[t]here is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” The Board also explained that the patent owner’s claim amendments should “respond to a ground of unpatentability involved in the trial,” as required by 37 C.F.R. § 42.121(a)(2)(i). The patent owner “also may include additional limitations to address potential § 101 or § 112 issues, if necessary.” Finally, the Board explained that a motion to amend “may not present substitute claims that enlarge the scope of the claims . . . or introduce new subject matter.”

https://www.uspto.gov/sites/default/files/documents/ Lectrosonics%2C%20Inc.%20v.%20Zaxcom%2C%20Inc.%2C%  20IPR2018-01129%2C%20-01130%20%28Paper%2015%29.pdf